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Courts and law professors often praise “fair use” as the counterweight that keeps copyright balanced with free expression. Those who actually litigate fair use cases, however, will tell you a very different story. They will tell you that, when it comes to copyright cases, it’s the copyright owner that has all the advantages. Thanks to the recent federal district court ruling in Online Policy Group v. Diebold, 2004 WL 2203382, 72 U.S.P.Q.2d 1200 (N.D. Cal. Sept. 30, 2004), however, the times they may be a-changin’. Fair users on the Internet can now go on the offensive to vindicate their free speech interests against overzealous copyright owners. First, a brief summary of the familiar copyright landscape. The fair use doctrine, codified in �107 of the Copyright Act, empowers courts to give would-be infringers a free pass when the activity in question does not cause economic harm to the copyright owner (actually, the statute directs courts to address a nonexclusive list of four factors, but it usually boils down to an equitable “no harm, no foul” rule). Fair use is generally understood as an affirmative defense. This leaves a fair user at a distinct disadvantage in litigation. First, until a copyright owner sends a concrete threat of litigation, the fair user may find it hard to get into federal court for lack of standing. Second, even if a threat letter creates standing sufficient to support a declaratory judgment claim, the copyright owner can moot the case at any time by issuing a covenant not to sue. And no matter the outcome, the fair user will likely be stuck footing her own attorneys’ fees. The recent ruling in Online Policy Group v. Diebold represents a leveling of the playing field. It is the first case interpreting a little-known part of the Digital Millennium Copyright Act (DMCA), 17 U.S.C �512(f), which could turn out to be a powerful new tool enabling online publishers and their ISPs to get into court to assert their fair use rights. The case arose from controversies surrounding Diebold Election Systems, one of the nation’s leading vendors of electronic voting machines. In recent months, an array of computer security professionals have sounded the alarm about security flaws in Diebold’s voting machines. In the midst of this public debate, an unknown person published an archive of e-mails collecting internal correspondence among Diebold’s own engineers. The e-mail discussions included a variety of damaging admissions, including evidence suggesting that Diebold’s own engineers had faked diagnostic tests and intended to overcharge county election officials in order to discourage them from improving voting machine security. Dozens of people re-published these e-mail archives on the Internet. Embarrassed, Diebold quickly loosed its lawyers. They immediately began sending “takedown” notices to the ISPs of those who were re-publishing the archives, arguing that the e-mail archive was copyrighted work owned by Diebold and that the re-publication constituted infringement for which the ISPs would be secondarily liable. These notices took advantage of a streamlined “notice and takedown” procedure created by the DMCA and codified at 17 U.S.C. �512. In order to take advantage of certain infringement liability “safe harbors,” an ISP must, upon receiving a takedown notice, expeditiously disable access to any materials it is hosting on behalf of a subscriber. For a short while, Diebold’s censorship campaign worked. The embarrassing e-mail archive began disappearing from the Internet. But two sets of re-publishers decided to fight back. One was a small student group at Swarthmore College that had posted the e-mail archives, only to have their college take down the material after receiving a takedown notice from Diebold. The second entity was Online Policy Group (OPG), a small nonprofit ISP that received a takedown notice from Diebold based on the fact that one of its subscribers (San Francisco Indymedia/Baymedia) published a link to other sites where the archives had been republished. OPG refused to delete the link in question, only to have Diebold send a further takedown notice to OPG’s upstream bandwidth provider. With representation from the Electronic Frontier Foundation and the Stanford Center for Internet and Society, these entities filed an affirmative case under �512(f) of the Copyright Act. �512(f) was designed to deter copyright owners from abusing the DMCA’s “notice and takedown” provisions to censor noninfringing materials. After all, most ISPs simply don’t have the resources to investigate every takedown notice they receive. Instead, many simply block the allegedly infringing content with no questions asked. The law needs a limiting mechanism to prevent copyright owners from using takedown notices as a cheap, extra-judicial tool of censorship. �512(f) aims to stop these abuses by giving ISPs and the publishers who depend on them an affirmative claim against a copyright owner that aims a takedown notice at noninfringing activity, including fair uses. The provision provides for damages, costs and attorneys’ fees to any ISP or publisher injured by a knowing material misrepresentation that an item is infringing. The Diebold case is the first reported decision applying the provision. In granting summary judgment to OPG and the Swarthmore students, U.S. District Court Judge Jeremy Fogel easily concluded that the republication of the Diebold email archives was fair use as a matter of law. Pivotal to the court’s conclusion was the fact that there was no commercial market for these e-mails, and thus the re-publication in no way diminished the (nonexistent) commercial value of the works. According to the Court, “Diebold sought to use the DMCA’s safe harbor provisions — which were designed to protect ISPs, not copyright holders — as a sword to suppress publication of embarrassing content rather than as a shield to protect its intellectual property.” The court held that �512(f) imposes liability on any copyright owner who sends a DMCA takedown notice that “knowingly” and “materially” misrepresents that copyright infringement has occurred. Watch for more ISPs and Internet publishers to invoke �512(f) to vindicate their fair use rights in court. Armed with an affirmative cause of action, as well as a mandatory fee shifting statute, fair users may find themselves magically transformed from defendants into plaintiffs, entitled to bring litigation on their own terms against copyright owners who fail to think twice before sending out DMCA takedown notices. Because it empowers ISPs and Internet publishers to bring affirmative claims to vindicate fair use rights, �512(f) will alter the incentives for attorneys on both sides of the divide. Those defending fair uses should be able to up the ante on those who send ill-founded takedown notices by telling them in no uncertain terms that the material is noninfringing and threatening legal action unless the takedown notice is withdrawn. Moreover, by bringing litigation in selected cases, ISPs and Internet publishers can begin to build precedents that may preemptively deter copyright owners from sending blunderbuss takedown notices in the first place. Counsel for copyright owners, on the other hand, will have to examine potential fair use arguments more closely in light of the Diebold ruling, especially if they have been informed by an ISP or publisher that the material may not be infringing. Fred von Lohmann is a senior staff attorney with the Electronic Frontier Foundation, a San Francisco-based nonprofit devoted to protecting civil liberties and free expression in the digital world.

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